Australia: IP changes on the horizon

Intellectual Property Laws Amendment (Raising the Bar) Bill
2011

Exposure draft legislation amending Australian IP legislation
was released for public viewing on Wednesday. The draft legislation
is currently titled Intellectual Property Laws Amendment
(Raising the Bar) Bill 2011. You can find a copy of the draft
Bill and explanatory memorandum here.

The reforms proposed in the legislation amend the Patents
Act 1990, Trade Marks Act 1995, Designs Act
2003 and Plant Breeders Rights Act 1994. In this
eAlert! we highlight some of the key proposed changes.

Patents

The reforms proposed in the draft Bill are intended (among other
things) to bring Australian law into line with major overseas
patent systems, including in the UK and USA, and include:

expanding the common general knowledge available for assessing
whether an invention is sufficiently inventive or innovative to now
include information known outside Australia

amending the test for inventive step to remove the requirement
that prior art information be reasonably expected to have been
"ascertained, understood and regarded as relevant" by a
person skilled in the relevant "art"

replacing the requirement that claims be "fairly based on
the matter described in the specification", with a requirement
that they be "supported by" that matter

increasing the exemptions to infringement to include use for
experimental purposes, and use for obtaining regulatory approval in
all fields of endeavour (in addition to the existing exemption for
pharmaceutical patents)

extending "secret use" exclusions to the effect that
any use of an invention within Australia, within 12 months of
filing a complete patent application, is not secret use

requiring a specification to disclose a "specific,
substantial and credible use for the invention"

requiring any provisional or complete application to disclose
the invention in a manner "which is clear enough and complete
enough for the invention to be performed by a person skilled in the
relevant art"

allowing prior use to be considered during examination in
relation to novelty and inventive step

requiring usefulness be investigated during examination of both
standard and innovation patents

increasing standards of proof for acceptance or re-examination
of, or opposition to patents, or certification of innovation
patents by allowing the Commissioner of Patents (Commissioner) to
refuse a patent where it is unlikely to be valid

prohibiting amendments where they would result in the
specification claiming or disclosing matter that extends beyond
that disclosed in the specification as filed

provision for the Commissioner to conduct a preliminary search
and opinion in relation to filing of a standard complete patent
application.

Trade Marks

In the trade mark sphere, the proposed amendments include:

provision for the award of additional damages, including for
flagrant infringement

reform of the opposition system including:

removing the requirement to serve a notice of opposition on an
applicant

a proposed requirement to file of a statement of particulars of
opposition grounds

introduction of a regime in which an applicant must file a
notice of intention to defend an opposition or its application will
lapse.

shifting the benefit of the doubt in favour of the applicant in
respect of borderline "descriptiveness" issues on
examination

introduction of a revised Customs seizure scheme with the aim
of preventing infringing importers from avoiding infringement
proceedings through avoidance of contact with the objector. A
similar revision will apply in respect of the Copyright Act
1968 seizure scheme

Simplifying the IP system

clarifying that the grace period for patents applies in respect
of complete, and not provisional, applications

preventing patents from being found void where granted to the
wrong person

limiting the availability of omnibus patent claims.

What happens next?

IP Australia is calling for public submissions in relation to
the draft Bill until 4 April 2011. The submissions made by
Middletons in the consulting phase for this legislation have been
adopted in the draft Bill.

Following the close of the current public consultative phase,
the Bill will be amended in light of any further submissions, and
it is intended that it be introduced into Parliament in the Winter
session.

We will continue to keep you informed of developments.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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The updated APO guidelines for patentability are also arguably counterproductive to encouraging innovation in Australia.

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